DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claim Rejections - 35 USC § 112 (a)
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-18 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Independent claims 1 and 10 require the limitation “the emitting layer comprises: a compound with a dipole moment of less than 1.7 10-³⁰ cm (0.5 debye), as component (1); an organic fluorescent compound whose onset of fluorescence is at lower energies than that of component (1) and at an energy higher than 2.6 eV, whose photoluminescence quantum yield is higher than 70% and whose ionization potential in absolute values is higher than 5.33 eV, as component (2); and an organic compound whose ionization potential in absolute values is lower than 5.33 eV and whose onset of fluorescence is at higher energies than that of component (2), as component (3), and the further layer comprises as component (4), a compound fulfilling the following requirement ionization potential in absolute values of component (1) - ionization potential in absolute values of component (4) ≤ 0.35 eV”. The instant description includes a description of how to determine the parameters of dipole moment, fluorescent onset, photoluminescence quantum yield and ionization potential. The description only provides a few examples of such materials that may meet these requirements but none are confirmed to do so (see spec tables 1 and 2). Note that these tables list two different Ionization potentials for HT-3 and the specification does not appear to define a single material that meets the requirements for dipole moment anywhere. The specification further provides exceptionally broad guidance on what materials that might be useable for each of these four components but provides no further description of which specific structural features would certainly lead to the claimed absolute or relative properties or limit these structures in any meaningful way. The limited number of examples described in the written description do(es) not provide a representative number of species sufficient to show that Applicant was in possession of the claimed genus (see MPEP 2163-II-A-3-a-ii).
Claim 5 is rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claim 5 requires that “component (3) has an energy difference between fluorescence and phosphorescence onsets of more than 0.20 eV. The instant description includes a description of how to measure fluorescence and phosphorescence onsets. The description only provides 3 examples of such a combination that meets this requirement. The specification further provides exceptionally broad guidance on what materials that might be useable for component (3) but provides no further description of which specific structural features would certainly lead to the claimed absolute or relative properties or limit these structures in any meaningful way. The 3 examples described in the written description do not provide a representative number of species sufficient to show that Applicant was in possession of the claimed genus (see MPEP 2163-II-A-3-a-ii).
Claims 1-18 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, because the specification, while being enabling for a few combinations of materials and devices, does not reasonably provide enablement for the entire scope of what is claimed. The specification does not enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make or use the invention commensurate in scope with these claims.
Case law holds that applicant’s specification must be “commensurately enabling [regarding the scope of the claims]” Ex Parte Kung, 17 USPQ2d 1545, 1547 (Bd. Pat. App. Inter. 1990). Otherwise undue experimentation would be involved in determining how to practice and use applicant’s invention. The test for undue experimentation as to whether or not a combination of four compounds within the scope of the claims can be used to form a combination with the requirements of a compound with a dipole moment of less than 1.7 10-³⁰ cm (0.5 debye), as component (1); an organic fluorescent compound whose onset of fluorescence is at lower energies than that of component (1) and at an energy higher than 2.6 eV, whose photoluminescence quantum yield is higher than 70% and whose ionization potential in absolute values is higher than 5.33 eV, as component (2); and an organic compound whose ionization potential in absolute values is lower than 5.33 eV and whose onset of fluorescence is at higher energies than that of component (2), as component (3), and the further layer comprises as component (4), a compound fulfilling the following requirement ionization potential in absolute values of component (1) - ionization potential in absolute values of component (4) ≤ 0.35 eV as claimed and whether the claims meet the test is stated in Ex parte Forman, 230 USPQ 546, 547 (Bd. Pat. App. Inter. 1986) and In re Wands, 8 USPQ2d 1400, 1404 (Fed.Cir. 1988). Upon applying this test to claims [#--##], it is believed that undue experimentation would be required because:
Breadth of the claims: The claims are very broad, with no structural limitations on the four materials required in a composition such that each component must be selected from an essentially infinite pool of candidate structures.
Nature of the invention: Materials in such devices have exceptionally variable structures and features that effect the electronic properties of such materials.
State of the prior art: While it is not unheard of for the features of dipole moment, ionization potential and fluorescence onset these properties are only very rarely reported for any material.
The level of one of ordinary skill: While the ordinarily skilled artisan would be capable of testing individual materials for properties such as fluorescence onset, dipole moment, PLQY and ionization potential, evaluation of each possible combination of materials is an essentially infinite task.
The level of predictability in the art: While computational methods are available to individually predict dipole moments such methods require individually calculating for every possible material and they cannot be used, as claimed, to predict the values of fluorescent onset, ionization potentials or PLQY and therefore the properties are not predictable.
Amount of direction provided: Applicant’s specification provides exceptionally broad direction on what sorts of materials might be used as each component but provides no examples of a material with the claimed dipole moment, and fluorescence onsets, PLQY, and ionization potential for only a few materials whereas each components claimed can be an infinite number of materials leading to a similarly limitless number of potential combinations.
The existence of working examples: Applicant has demonstrated no clearly described working examples positively recited to meet the claims that are representative of only an exceptionally narrow grouping of materials and similar structures.
The quantity of experimentation needed to make or use the invention based on the content of the disclosure: In order to determine the scope of the invention, every possible material for each of the first, second third and fourth component would need to be evaluated for ionization potential, fluorescence onset, and/or dipole moment then determine if each such combination met the claim limitations. As no structural limitations whatsoever are given for any of the first, second, or third or fourth components this represents an essentially infinite amount of experimentation.
In light of the above factors, it is seen that undue experimentation would be necessary to make and use the invention of claims 1-18.
Claim Rejections - 35 USC § 112 (b)
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-18 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claims 1-18 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claims 1 and 10 each require “a dipole moment is computed with a DFT method with Gaussian 16 software;”. This limitation is indefinite as it requires an analysis by a transient software system. That is, the required software system updates resulting in variable results or unavailability of the software required to determine the metes and bounds of the claims. Further, it is unclear such software at version 16 would be available for the lifetime of any possible granted patent protections. Therefore, the metes and bounds of claims 1-18 are indefinite.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1-18 are rejected under 35 U.S.C. 103 as being unpatentable over Tasaki et al (WO 2018/186396) (Tasaki) in view of Kato et al (WO 2019132040) (Kato).
It is noted that when utilizing Tasaki, the disclosures of the reference are based on US 2021/0005826 which is an English language equivalent of the reference because the US PG-PUB is the national stage entry of the international application upon which the WO document is based.
It is noted that when utilizing Kato, the disclosures of the reference are based on US 2021/0062078 which is an English language equivalent of the reference because the US PG-PUB is the national stage entry of the international application upon which the WO document is based.
In reference to claims 1-7, 9-10 and 13-18, Tasaki teaches organic electroluminescent devices comprising first and second compounds in the light emitting layer between an anode and a cathode and a layer between the emitting layer and anode such as in the examples described in Table 3 for example wherein the emitting layer includes a compound BH1-1 as shown below, BD-6 as shown below and BH2-5 as shown below and wherein the layer between the anode and emitting layer includes HT-2 as shown below (Tasaki Abstract, Table 3, examples 40 and 36).
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192
402
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164
332
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288
336
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308
336
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Tasaki does not exemplify this exact combination. The difference between, e.g. example 40 and the example described herein is selection of a BH2-5 instead of BH2-4, such as demonstrated in examples 36 and 39, which is one of a small number of exemplified materials for this same function in the devices of Tasaki. It would have been obvious to have made this substitution in the absence of unexpected results from such a specific combination.
Tasaki does not teach specifically that the fluorescent dopant BD-6 meets the requirements for the component (2) as instantly claimed regarding fluorescent onset, PLQY and ionization potential.
With respect to the difference, Kato teaches a compound 4 as shown below for use as a fluorescent dopant for organic electroluminescent devices and demonstrates that it provides an improvement in external quantum efficiency from 6.1% to 9.1% in comparison with the compound BD-6 of Tasaki (Kato abstract, Table 2).
In light of the motivation of using compound 4 as described above, it would therefore have been obvious to one of ordinary skill in the art before the effective filing date of the instant application to use the compound 4 as described by Kato in order to improve external quantum efficiency and thereby arrive at the claimed invention.
While Tasaki in view of Kato does not expressly teach that teach of the components of the device meets the claim limitations of the emitting layer comprises: a compound with a dipole moment of less than 1.7 10-³⁰ cm (0.5 debye), as component (1); an organic fluorescent compound whose onset of fluorescence is at lower energies than that of component (1) and at an energy higher than 2.6 eV, whose photoluminescence quantum yield is higher than 70% and whose ionization potential in absolute values is higher than 5.33 eV, as component (2); and an organic compound whose ionization potential in absolute values is lower than 5.33 eV and whose onset of fluorescence is at higher energies than that of component (2), as component (3), and the further layer comprises as component (4), a compound fulfilling the following requirement ionization potential in absolute values of component (1) - ionization potential in absolute values of component (4) ≤ 0.35 eV, these properties are inherent to the compounds as claimed. As the materials of Tasaki in view of Kato are structurally identical to those described in the instant specification, the device meets is presumed to meet these limitations. The prior art compounds BH1-1, compound 4, BH2-5, and HT-2 are identical to the instant BH-1, BD-1, AD-2 and AD-1 in pages 91 to 93 of the specification filed 12/14/2022.
For Claim 1: Reads on wherein BH1-1 is component 1, compound4 is component 2, BH2-5 is component 3 in the emitting layer between anode and cathode and HT-2 is component 4 in a further layer between the emission layer and anode.
For Claim 2: Reads on an aromatic hydrocarbon.
For Claim 3: Reads on 23 nm.
For Claim 4: Reads on a boron containing compound.
For Claim 5: Reads on 0.65 eV.
For Claim 6: Reads on different materials.
For Claim 7: Reads on 2%.
For Claim 9: Reads on 1:3.
For Claim 10: Reads on a material.
For Claim 14: Reads on an electronic equipment.
For Claim 10: Reads on a device.
For Claim 16: Reads on anthracene skeleton-containing compound.
For Claim 17: BH2-5 reads on formula (31), wherein n is 1, L0 is a bond, Ar0 is a spirofluorenyl, Ar3 is biphenyl and Ar4 is dimethylfluorenyl.
For Claim 18: Reads on wherein Ar0 is a spirofluorenyl, L0 is a bond, and n is 1.
In reference to Claims 8 and 11-12, Tasaki in view of Kato teaches the device as described above. Tasaki further teaches that the second material BH2-5 can be included at various concentrations from 2% to 20%, overlapping with the instantly claimed range and that when selected within such a range, the region of high excitation density becomes close to the central portion of the fluorescent e mitting layer to increase the lifetime (Tasaki [0035]). As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Sean M DeGuire whose telephone number is (571)270-1027. The examiner can normally be reached Monday to Friday, 7:00 AM - 5:00 PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jennifer A. Boyd can be reached at (571) 272-7783. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Sean M DeGuire/Primary Examiner, Art Unit 1786